DECISION

 

Guitar Center, Inc. v. Mei Huang Zhen

Claim Number: FA2412002129155

PARTIES

Complainant is Guitar Center, Inc. ("Complainant"), represented by Gina Carrillo of Corsearch, Texas, USA. Respondent is Mei Huang Zhen ("Respondent"), China.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <musicguitarcenter.com>, registered with West263 International Limited.

 

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

 

Charles A. Kuechenmeister, Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on December 11, 2024; Forum received payment on December 11, 2024.

 

On December 12, 2024, West263 International Limited confirmed by e-mail to Forum that the <musicguitarcenter.com> domain name is registered with West263 International Limited and that Respondent is the current registrant of the name. West263 International Limited has verified that Respondent is bound by the West263 International Limited registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

 

On December 18, 2024, Forum served the Complaint and all Annexes, including a Chinese and English Written Notice of the Complaint setting a deadline of January 7, 2025 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@musicguitarcenter.com. Also on December 18, 2024, the Chinese and English Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts.

 

Having received no Response from Respondent, Forum transmitted to the parties a Notification of Respondent Default in Chinese and English.

 

On January 8, 2025, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Charles A. Kuechenmeister as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of a Response.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PRELIMINARY ISSUE: Language of The Proceeding

According to the registrar, the registration agreement is written in Chinese. Rule 11(a) provides that the language of the proceedings is the language of the registration agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the case. Complainant filed its Amended Complaint in English and requests that these proceedings be conducted in English. Factors which previous panels have seen as important include potential unfairness or unwarranted delay in ordering translation of the pleadings and the Decision, and evidence showing that the respondent can understand the language of the complaint, the language of the domain name, the content on any web pages resolving from the domain name, and prior correspondence between the parties. The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (WIPO Overview 3.0), at ¶ 4.5.1. The WIPO Overview is not a definitive statement of applicable law which governs any particular issue, but it does express a consensus among a significant number of UDRP panelists as to how particular issues typically are and should be resolved. This Panelist accepts that consensus on this and other issues addressed later in this Decision.  See also, The Argento Wine Company Limited v. Argento Beijing Trading Company, D2009-0610 (WIPO July 1, 2009) (panel exercising discretion in deciding that the language of the proceedings advance in English, contrary to the Registration Agreement, based on evidence that respondent has command of the language), Finter Bank Zurich v. Shumin Peng, D2006-0432 (WIPO June 12, 2006) (deciding that the proceeding should be in English, stating, "It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her ability to articulate the arguments for the case.").

 

In this case, the domain name is written in English and targets a U.S.-based firm. The website to which it resolves is written exclusively in English (screenshots included in Complaint Exhibits H and I). This demonstrates that Respondent is proficient in English. Further, the Written Notice of the Complaint, written in both Chinese and English, was served upon Respondent in accordance with Rules 1 and 2. Respondent has not submitted a Response or any indication that it desires to participate in this proceeding, in Chinese or otherwise. Under these circumstances the Panel finds that the additional time and expense of proceeding in Chinese would be unwarranted inasmuch as the only party who might benefit from that has declined to participate. Adidas AG v. Daehyeon Kim, WIPO Case No. 2013-1904 ("In the present case, the Respondent waived any objection to proceeding in English by failing to respond to the Center's notice sent in both English and Korean."). For the reasons above set forth, this proceeding will be conducted in English.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant operates a large musical instrument retail business with 294 locations and its website at <www.guitarcenter.com>. It has rights in the GUITAR CENTER mark based upon its registration of that mark with the United States Patent and Trademark Office (USPTO). Respondent's <musicguitarcenter.com> domain name is identical or confusingly similar to the GUITAR CENTER mark as it incorporates the entire mark, merely omitting the space and adding the descriptive term "music" and the ".com" generic top-level domain (gTLD).

 

Respondent has no rights or legitimate interests in the domain name. It is not commonly known by the domain name, it is not affiliated with Complainant and Complainant has not authorized it to use its mark, and it is not using the domain name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use but instead is using the domain name to pass off as Complainant or an affiliate and advertise musical instruments and accessories for sale.

 

Respondent registered and uses the domain name in bad faith. It attempts to attract for commercial gain Internet users to its website by creating confusion with Complainant's mark as to the source, sponsorship, affiliation or endorsement of its website, by diverting customers from Complainant's website through the confusingly similar domain name it is disrupting Complainant's business, and it registered the domain name with actual knowledge of Complainant 's rights in its marks.

 

B. Respondent

Respondent did not submit a Response in this proceeding.

 

FINDINGS

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."

 

Paragraph 4(a) of the Policy requires a complainant to prove each of the following three elements to obtain an order cancelling or transferring a domain name:

 

(1)       the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(2)       the respondent has no rights or legitimate interests in respect of the domain name; and

(3)       the domain name has been registered and is being used in bad faith.

 

In view of Respondent's failure to submit a Response, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules the Panel will decide this administrative proceeding on the basis of Complainant's undisputed representations and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.  The Panel is entitled to accept all reasonable allegations set forth in a complaint. Nevertheless, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) ("Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint"), WIPO Overview 3.0, at ¶ 4.3 ("In cases involving wholly unsupported and conclusory allegations advanced by the complainant, . . . panels may find that—despite a respondent's default—a complainant has failed to prove its case.").

 

The Panel finds as follows with respect to the matters at issue in this proceeding:

 

Identical and/or Confusingly Similar

The GUITAR CENTER mark was registered to Complainant with the USPTO (Reg. No. 2,280,874) on September 28, 1999 (TSDR printout included in Complaint Exhibit E). Complainant's registration of its mark with the USPTO establishes its rights in that mark for the purposes of Policy ¶ 4(a)(i). Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (stating, "Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.").

 

Respondent's <musicguitarcenter.com> domain name is identical or confusingly similar to the GUITAR CENTER mark. It fully incorporates the mark, merely omitting the space and adding the descriptive term "music" and the ".com" gTLD. These changes do not distinguish the domain name from Complainant's mark for the purposes of Policy ¶ 4(a)(i). Dell Inc. v. Protection of Private Person / Privacy Protection, FA 1681432 (Forum Aug. 1, 2016) ("A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs. Likewise, the absence of spaces must be disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax prohibits them."), 7-Eleven, Inc. v. Edwin Ng / Vipz Kit, FA61459 (Forum October 12, 2023) ("[the domain names] incorporate the mark its entirety, merely omitting the hyphen and adding generic or descriptive terms . . . and the gTLD").  The WIPO Overview 3.0, at ¶ 1.7, states that the test for confusing similarity "typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the domain name."  Notwithstanding the changes described above, Complainant's mark is clearly recognizable within the domain name.

 

Further, the addition of a descriptive term that relates to a complainant can actually enhance confusion. That is the case with the domain name involved here. The term "music" is closely associated with Complainant's musical instruments products. Adding this term to Complainant's mark in the domain names relates directly to Complainant's business and enhances the confusing similarity. PADI Americas, Inc. v. MPM Administration, FA 1783415 (Forum May 22, 2018) (finding the <padivacations.com> domain name to be confusingly similar to the complainant's PADI mark: "the inclusion of the suggestive term 'vacations' in the at-issue domain name only adds to any confusion between the domain name and Complainant's trademark since the term suggests Complainant's travel related services.").

 

For the reasons set forth above, the Panel finds that the domain name is identical or confusingly similar to the GUITAR CENTER mark, in which Complainant has substantial and demonstrated rights.

 

Rights or Legitimate Interests

If a complainant makes a prima facie case that the respondent lacks rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii), the burden of production shifts to respondent to come forward with evidence that it has rights or legitimate interests in it. Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) ("Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests"). If a respondent fails to come forward with such evidence, the complainant's prima facie evidence will be sufficient to establish that respondent lacks such rights or legitimate interests. If the respondent does come forward with such evidence, the Panel must assess the evidence in its entirety. At all times, the burden of proof remains on the complainant. WIPO Overview 3.0, at ¶ 2.1.

 

Policy ¶ 4(c) lists the following three nonexclusive circumstances, any one of which if proven can demonstrate a respondent's rights or legitimate interests in a domain name for the purposes of Policy ¶ 4(a)(ii):

 

(i)                      before any notice to the respondent of the dispute, the respondent has used or has made demonstrable preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii)                      the respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or

(iii)                      the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

 

Complainant asserts that Respondent has no rights or legitimate interests in the domain name because (i) it is not commonly known by the domain name, (ii) it is not affiliated with Complainant and Complainant has not authorized it to use its mark, and (iii) it is not using the domain name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use but instead is using the domain name to pass off as Complainant or an affiliate and advertise musical instruments and accessories for sale.  These allegations are addressed as follows:

 

The WHOIS information provided to Forum by the registrar lists the named Respondent as the registrant of the domain name. This name bears no resemblance to the domain name. Evidence could, of course, in a given case demonstrate that the respondent is commonly known by a domain name different from the name in which it registered the domain name, e.g., the case of a domain name incorporating the brand name of a specific product offered by and associated with the respondent. In the absence of any such evidence, however, UDRP panels have consistently held that WHOIS evidence of a registrant name which does not correspond with the domain name is sufficient to prove that the respondent is not commonly known by the domain name. Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed Domain Name when the identifying information provided by WHOIS was unrelated to the Domain Name or respondent's use of the same), Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). The Panel is satisfied that Respondent has not been commonly known by the domain name for the purposes of Policy ¶ 4(c)(ii).

 

Complainant alleges that Respondent has no affiliation with it and that it has not licensed or authorized Respondent to use its mark.  Complainant has specific competence to make these allegations and they are not disputed. In the absence of evidence that a respondent is authorized to use a complainant's mark in a domain name or that a respondent is commonly known by the disputed domain name, the respondent may be presumed to lack rights or legitimate interests in the domain name. IndyMac Bank F.S.B. v. Eshback, FA 830934 (Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register Domain Name featuring the complainant's mark and failed to submit evidence that it is commonly known by the domain name), Indeed, Inc. v. Ankit Bhardwaj / Recruiter, FA 1739470 (Forum Aug. 3, 2017) ("Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant's trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.").

 

Complaint Exhibits H and I contain screenshots of the website resolving from the domain name. Respondent's website is not an exact copy of Complainant's in layout and general appearance, but it prominently displays the GUITAR CENTER mark and distinctive logo of Complainant, it advertises musical instruments for sale, and many of the photos of products appearing on Respondent's website are identical to those appearing on Complainant's website at <www.guitarcenter.com> (screenshots submitted as Complaint Exhibits J and K).  There is nothing on Respondent's site to inform the visitor that the site is not associated with Complainant. Respondent's website unquestionably passes off as that of Complainant or an authorized affiliate and purports to offer many of the products advertised on Complainant's website, at deep discounts. Passing off as a complainant or authorized representative of a complainant and offering to sell the same or similar products offered by a complainant does not qualify as a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i), or as a legitimate noncommercial or fair use within the meaning of Policy ¶ 4(c)(iii). Netflix, Inc. v. Irpan Panjul / 3corp.inc, FA 1741976 (Forum Aug. 22, 2017) ("The usage of Complainant's NETFLIX mark which has a significant reputation in relation to audio visual services for unauthorised audio visual material  is not fair as the site does not make it clear that there is no commercial connection with Complainant and this amounts to passing off . . . As such the Panelist finds that Respondent does not have rights or a legitimate interest in the Domain Name."), Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA 1741737 (Forum Aug. 21, 2017) ("Respondent uses the [disputed] domain name to divert Internet users to Respondent's website… confusing them into believing that some sort of affiliation exists between it and Complainant… [which] is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).").

 

On the evidence presented, and in the absence of any evidence from Respondent, the Panel finds that Respondent has no rights or legitimate interests in the domain name.

 

Registration and Use in Bad Faith

Policy ¶ 4(b) sets forth a nonexclusive list of four circumstances, any one of which if proven would be evidence of bad faith use and registration of a domain name. They are as follows:

 

(i)                      circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant which is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent's documented out-of-pocket costs directly related to the domain name; or

(ii)                      the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or

(iii)                      the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv)         by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent's web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation or endorsement of the respondent's web site or location or of a product of service on the respondent 's web site or location.

 

The evidence of Respondent's conduct discussed above in the rights or legitimate interests analysis also supports a finding of bad faith registration and use, based upon the foregoing grounds articulated in the Policy and upon additional grounds adopted by UDRP panels over the years. First, by passing off as Complainant and offering to sell the same or similar products offered by Complainant, Respondent is using the confusingly similar domain name to attract, for commercial gain, Internet users to its web site by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of his web site. The evidence does not disclose whether Respondent is actually selling the products advertised on its website or fraudulently representing that it does, collecting money from the customer and not delivering the goods. The latter scenario seems more likely because some of the price discounts advertised are so deep, e.g., a guitar discounted from $349 to $70, that Respondent would be hard-pressed to honor them and remain in business. Regardless of which scenario is present here, Respondent's conduct fits squarely within the circumstances described in Policy ¶ 4(b)(iv) and is manifest evidence of bad faith registration and use. Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) ("The Panel agrees that Respondent's use of the website to display products similar to Complainant's, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).").

 

As discussed above, Respondent is using the domain name to pass off as Complainant. Policy ¶ 4(b) recognizes that mischief can manifest in many different forms and takes an open-ended approach to bad faith, listing some examples without attempting to enumerate all its varieties. Worldcom Exchange, Inc. v. Wei.com, Inc., WIPO Case No. D-2004-0955 (January 5, 2005). The non-exclusive nature of Policy ¶ 4(b) allows for consideration of additional factors in an analysis for bad faith, and passing off as a complainant, in and of itself, is evidence of bad faith. Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum December 27, 2017) (finding bad faith where "Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant's own website in order to confuse users into believing that Respondent is Complainant or is otherwise affiliated or associated with Complainant.").

 

Complainant alleges that Respondent's conduct also falls within the circumstances described in Policy ¶ 4(b)(iii). Policy ¶ 4(b)(iii) reads as follows:  "you [the respondent] have registered the domain name primarily for the purposes of disrupting the business of a competitor" (emphasis supplied). By using the domain name to divert internet traffic intended for Complainant to its own site, Respondent is clearly disrupting the business of Complainant. And, by purportedly offering products similar to or the same as those offered by Complainant, Respondent is also competing with Complainant. 

 

There is, however, another aspect of the concept of competition to be considered. In order for a respondent's conduct to fall within Policy ¶ 4(b)(iii), the competition must exist before the domain name is registered. Otherwise, the respondent's conduct would not fall within the language of ¶ 4(b)(iii), paraphrased as "you registered the domain name primarily to disrupt the business of a competitor."  The competition must exist before the registration. In this case there is no evidence that Respondent was competing with Complainant prior to its registration of the domain names, and it appears that any actual competition between them arose only after Respondent registered and began using them. Even then, it is questionable whether disrupting the Complainant's business was Respondent's primary purpose in registering the domain names. On the contrary, the evidence strongly suggests that Respondent's primary motive was not so much to harass or annoy an existing commercial adversary as it was to trade upon Complainant's goodwill and reputation and profit commercially by creating confusion as to the source, sponsorship, affiliation or endorsement of its site, which is properly addressed under Policy ¶ 4(b)(iv). Respondent's conduct does not fall within the circumstances stated in Policy ¶ 4(b)(iii).

 

That said, using a confusingly similar domain name to attract Internet traffic to a web site which passes off as and disrupts the business of a complainant is still bad faith. As discussed above, the non-exclusive nature of Policy ¶ 4(b) allows for consideration of additional factors in an analysis for bad faith, and using a confusingly similar domain name to disrupt the business of a complainant by passing off as and competing with that complainant is sufficient evidence of bad faith to meet the requirements of Policy ¶ 4(a)(iii). Respondent knew or should have known the disruptive impact its conduct would have upon Complainant's business. Respondent intentionally went forward with its plans in spite of that, and this demonstrates bad faith independently of Policy ¶ 4(b)(iii). Red Wing Shoe Company, Inc. v. wei zhang / Magdalena Jennifer / Mu Yan / Carolina Rodrigues / Fundacion Comercio Electronico, FA1911001873163 (Forum January 3, 2020).

 

Finally, it is evident that Respondent had actual knowledge of Complainant and its mark when it registered the domain name in October 2024 (WHOIS printout submitted as Complaint Exhibit I shows creation date). Complainant began using its mark at least as early as the first use date of June 1965 shown on the TSDR printout included in Complaint Exhibit E, and is well-known as a retail source of musical instruments (media and social media recognition of Complainant and its mark included in Complaint Exhibit G). More importantly, Respondent had to have had actual knowledge of Complainant in order to advertise Complainant's products using Complainant's name. There is no question that Respondent knew of Complainant and its mark when it registered the domain name. Given the non-exclusive nature of Policy ¶ 4(b), acquiring a confusingly similar domain name with actual knowledge of a complainant's rights in its mark is evidence of bad faith registration and use for the purposes of Policy ¶ 4(a)(iii).  Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).

 

For the reasons above set forth above, the Panel finds that Respondent registered and is using the domain name in bad faith within the meaning of Policy ¶ 4(a)(iii).

 

DECISION

Complainant having established all three elements required under the Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <musicguitarcenter.com> domain name be TRANSFERRED from Respondent to Complainant

 

 

Charles A. Kuechenmeister, Panelist

January 9, 2025